California company wins WIPO arbitration over Korean company, Vertical Axis
CHICAGO– LAWFUEL – The Legal Newswire –Welsh & Katz, Ltd. client, Esquire Innovations, Inc. has won control of the domain name — ISCRUB.com — from Vertical Axis, Inc., located in Gyeonggi-do, Republic of Korea. Esquire Innovations developed and markets iScrub®, a popular software tool that companies use to remove metadata from office documents.
“iScrub® software is part of a suite of metadata management and document production products our company has developed and marketed for several years,” explains Randall Farrar, President & CEO of Esquire Innovations. “We are extremely pleased to have control of the domain name ISCRUB.com as it is our intellectual property,” he says.
“The WIPO arbitration panel’s ruling ensures that Esquire Innovations retains ownership of its iScrub® brand as embodied in the ISCRUB.com domain name,” explains Richard J. Gurak, a principal with Welsh & Katz and Esquire Innovation’s attorney in the arbitration. “We are hopeful that this outcome sends a clear message that WIPO arbitration hearings will fairly protect companies with registered trademarks from individuals or companies that register domain names for potentially dubious reasons,” he says.
The World Intellectual Property Organization (WIPO) Arbitration and Mediation Center is a substitute for a court hearing and can only transfer domain names if three criteria are met. The domain name must be identical or confusingly similar to the complainant’s trademark or service mark; the registrant of the domain name must have no rights or legitimate interests in the domain name; and the domain name must have been registered and used in bad faith. In this matter, the WIPO arbitration panel found that all three criteria had been fulfilled and ordered a transfer of the ISCRUB.com domain name.
According to Gurak, most WIPO arbitrations are heard by a single arbitrator and normally last only two months. However, this matter was heard by a panel of three arbitrators and lasted four months. The extended session was due in part to the domain name registrant concealing its identity and the panel allowing critical supplemental information to be filed during the arbitration, something that seldom happens, but is within the panel’s discretion, Gurak reports.
Gurak has represented numerous clients before WIPO for domain name disputes. He was assisted on this matter by Martin Masar, III, a technical advisor at Welsh & Katz.
Esquire Innovations, Inc., a leading provider of Microsoft Office integrated practice management software services and applications for the legal market, counts more than 500 law firm and in-house council clients utilizing its applications. Esquire Innovations has been developing, supporting, and selling document creation, formatting, re-purposing, comparing, and metadata management software applications in the legal industry since 1999.
Vertical Axis was represented by Ari Goldberger of ESQwire.com Law Firm.
Welsh & Katz, Ltd. is a full-service intellectual property law firm known for its impressive success record and the breadth of its international practice. The Firm focuses on obtaining patents, trademarks and copyrights; domain names; intellectual property litigation; protecting trade secrets; product anti-counterfeiting; clearance opinions; and licensing transactions. The Firm serves technology-dependent clients, including small, mid-sized and large companies, universities, and individuals in the fields of electronics, pharmaceuticals, chemicals, petrochemicals, computers, banking and finance, biotechnology and entertainment. Additional information about the firm is available at WWW.WELSHKATZ.COM.